The Dot.Com World is About to Explode: BB&K's G. Henry Welles Examines the Legal Implications of The Roll Out of New Generic Top-Level Domains

by Best Best & Krieger LLP
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The Press-Enterprise - January 30, 2014

The dot.com world is about to explode. The number of Internet domain names will significantly increase over the next few years with the roll out of new generic top-level domains, known as gTLDs for short. These will change the Internet experience forever, expanding the number of gTLDs from the present 22 (i.e. .com, .org., .net) to more than a thousand. The new gTLDs will indicate what the website contains and will help speed searches and Internet use. For business owners, there will be new opportunities for creativity, marketing and increased connectivity. For example gTLDs can be functional and describe geographic locations such as .la for Los Angeles; cultural groups such as .family; and products and services such as .biz, .solar, .construction or .contractors.

The explosion of domain name extensions, however, increases the potential for online trademark abuse and consumer confusion. For example, sometimes domain names are registered that contain the trademark of another business or individual. Until now the strategies to address this have included filing a domain name dispute complaint with the Internet Corporation for Assigned Names and Number, known as ICANN; filing a court action for trademark infringement; or simply the buying up of all domain names using the trademark for each of the 22 extensions. With the explosion of gTLDs, however, these strategies may become overly expensive and impractical if multiple gTLDs are involved.   

ICANN, a Los Angeles-based nonprofit corporation that oversees the distribution of domain names, has instituted new Rights Protection Mechanisms along with the new gTLD program that are designed to better serve trademark and brand owners in addressing misuse of domain names. These new mechanisms include:

1.         Legal Rights Objections. Trademark owners may formally object to an application for a new gTLD prior to it being issued. A panel will then determine if the proposed gTLD will be likely to infringe upon the objector’s existing trademark or not.

2.         Trademark Clearinghouse. Trademark owners may register their trademarks with the Trademark Clearinghouse and they will receive notice if a proposed gTLD may interfere with an existing registered trademark. Trademark owners will also have the opportunity to purchase gTLDs that contain their exact trademark before they are made available to the public.

3.         Uniform Rapid Suspension System. In cases where the trademark infringement is very clear, a trademark owner may quickly obtain a suspension of the domain name for the remainder of the registration period.

4.         Uniform Domain Name Dispute Resolution Policy. This is the existing procedure whereby a complaint can be brought to ICANN against a domain name holder if the domain name violates a trademark and is the result of bad faith and abusive registration. The required showing that there is bad faith and no legitimate purpose for the registration makes this process more difficult for the trademark owner than merely showing likelihood of infringement of a trademark. 

5.         Post-Delegation Dispute Resolution Procedure. This is another procedure allowing a complaint to be brought by a trademark owner and in this case the complaint is against a domain name registry operator instead of the domain name holder. 

Trademark owners should be aware of the rollout of the new gTLDs, and of their new rights under the Rights Protection Mechanisms, and position themselves to take advantage of these. You can even apply for a new gTLD that you create yourself for a mere $185,000.

* This article was first published in The Press-Enterprise on Jan. 26, 2014. Republished with permission.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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